1. Shri Bakhat Singh and other trading as Sardar Trading Company (hereinafter referred to as the respondents) applied to the Restart of Trade Mark consisting essentially of the device of a tiger and the word 'TIGER' in English in class 25 in repeat of shoulder pads. M/s. Fancy Shoulder Pad Makers (hereafter in referred to as the appellants) filed opposition to the said application. The opposition to the swain application. The opposition was based upon the proprietors of a registered trade mark consisting for the device of a lion in class 25 in respect of shoulder pad in the Union Territory of Delhi and that the adoption of the appellant's trade mark by the respondent was dishonest. The Assistant Registrant while holding that the proposed trade mark of the respondent was likely to device the public into believing that the proposed trade mark of the respondent was the same as that the appellant inasmuch as both the words 'Lion' bad 'Tiger' were known in Urdu. Hindi and Punjabi as 'Sheer' but taking note of the fact that the appellant trade mark was registered only for the Union Territory of Delhi rejected the objection of the appellant to the registration o the respondent trade mark for areas other than the Union Territory of Delhi and passed the following order:--
'I order that application No. 206506 good shall proceed to registration subject to the following conditions
(a) The specification of the goods shall be limited to 'shoulder Pad. but not for sale in the Union Territory of Delhi'.
(b) Registration of the trade mark shall give on right to the exclusive use of the expression 'fast to wash and dry clean'.
The appellant have file the person appeal against the dais order of the learned Assistant Registrar.
2. Before considering the respective contention of the parties I shall refer to the finding of the learned Assistant Registrar about which there is no dispute. The learned Assistant Register has recorded the following findings:--
(i) The trade mark in the appellant was registered or also in the Union Territory of the Delhi only;
(ii) Although the appellant claimed that their registered trade mark had by virtue of extensive use acquired reputation even put side the Union Territory of the Delhi there was no evidence in support of this claim;
(iii) The proposed register trade mark of the respondent was likely to deceive or case confusion inasmuch as the word 'Lion' and the word Tiger were both known in Hindi. Urdu and Punjabi as 'Sher' and
(iv) The registration of the respondent trade mark was barred both by the Section 11 as well as by section 12(1) of the trade and Merchandise Marks Act 1958 so far as the union treaty of Delhi was concerned.
3. The learned Assistant Register has also given a finding the expect for the fact that both the lion and tiger we known by the name of Sher in Hindi, Urdu and Punjabi the two marks are not similar. this finding is challenged by the appellant. According to the appellants even the device in the two marks is deceptively similar. I there fore compared the two marks both as they appeared in the Trade Marks Journal as well as they appeared on the label affixed to the shoulder pads. Applying the principle laid down by the Bombay High Court in Cuba Ltd. Basle Switzerland v. M. Rambling, : AIR1958Bom56 . I am the view that the two marks are deceptively similar although they might differ in some details. it any be stated that the tiger in the respondent proposed trade marks is not distinctive and may easily be mistaken for a lion. There the similarity between the two trade marks not only lies in the common word 'Sher by which both the device are known in vernacular languages but also by reason of the resemblance of the devices in the two trade marks.
4. It the appellant trade mark had been registered of the whole of the country and not for the Union Territory of Delhi only or if the appellant were able to prove that not withstanding the registration of their trade mark for the Union Territory of Delhi it had been used even outside the Union Territory of the Delhi then there would be no difficulty in holding that the respondent proposed trade mark was debarred from the was debarred from registration both Section 11 as the well as under Section 12(1) of the said Act. The question for consideration is whether the fact that the appellant' trademark is registered the whether the fact that the appellant trade mark is registered only for the Union Territory of Delhi makes any difference.
5. Mr.Anoop Singh Learned counsel for the appellant contends that once a trade mark is registered then Section 12(1) will operate as a bar far the registration of the similar trade mark even outside the Union Territory of Delhi. According to the learned counsel Section 12 does not mark any distinction between case where a trade mark is registered in respect of the entire country and a trade mark registered in respect of a particular area of region and that the only exception to this rule is the one which is covered by sub-section (3) of Section 12 of the Act in this connection . it is pointed out that the respondent do not seek to come within the scope of sub-section (3) inasmuch as they do not claim any honest concurrent use of their trade mark. I am unable to accept this contention for the reason that the word 'a trade mark which is already registered' appearing in sub-section (1) of Section 12 of the Act must be read along with the provisions of Section 18. Sub-section (4) of Section 18 empowers the Registrar to accept an application 'Subject' to such amendments modification condition or limitation if any as he may think fit'. The registration referred to in sub-section (1) of section 12 is the registration subject to the amendments. modification condition or limitation imposed by the Registrar under Sub-section (4) of the Section 18. In the present case the appellant trade mark was registered subject to the limitation that it was to be used by the appellant that it was to be used by the appellant for sale of the shoulder pads in the Union Territory of Delhi. Section 12(1) would be a bar to the registration of the respondents' trade mark for the Union Territory of Delhi but would not be a bar for the registration of the respondents' trade mark outside the Union Territory of Delhi.
6. The learned counsel for the appellant next contends that even if Section 12(1) does not a operate as a bar, Section 11(a) of the Act would operate as a bar to the registration of the respondents trade mark even of the areas outside the Union Territory of Delhi. The applicability of Section 11(a) of the Act would certainly not depend upon the registration of the mark of the opponent. It will apply even if the mark of the opponent had not been registered provided it is provided that even not been registered. It had actually been used and for the reason the proposed trade mark was likely to deceive or cause confusion. In this case. the learned Assistant Registrar has found that there is no evidence to prove that the appellant trade mark has been used outside the Union Territory of Delhi. thereforee it would follow that outside the Union Territory of Delhi the use of the respondent proposed trade mark would not be likely to device or cause confusion. Hence Section 11(a) of the act would not be a bar to the registration of the Union Territory of Delhi.
7. The learned counsel for the appellant also sought to bring his case within clause (e) of Section 11 which reads as follows:--
'Which would be otherwise be disentitled to protection in a court'.
But he was not able to substantiate his case under this clause of the not able to show how his case would come within the scope of this clause'.
8. The final contention of the leaned counsel for the appellant is that the adoption by the respondent of a trade mark which was deceptively similar to the registered trade mark of the appellant amounted to dishonest trade practice and for that reason the learned Assistant Registrar should have exercised is discretion under Section 18 of the Act and refused registration to the use respondent trade mark even for the Union Territory of Delhi. such a contention had been raised before the learned Assistant Registrar also. but in was not accepted. What appear to have weighted with the leaned Assistant Registrar is that part from the fact that the lion and tiger were known by the word Sher in some of the Indian languages. there was no other similarity between the two trade marks. I have already indicated that the leaned Assistant Registrar was not tight in his view that there was no other similarity between the two devices. thereforee this case where there is similarity in the devices there is similarity in the other words used in the label. namely. 'fast to wash and dry clean'. and both the devices are commonly known in the Indian; languages as Sher. All these circumstances cannot be a mere coincidence. The appellant trade mark was admittedly in the Union Territory of Delhi from the date of its registration in 1957 and the respondent must have been aware of this fact. the adoption of a similar trade mark by the respondent was obviously with a view to exploit the reputation which the appellant trade mark had already acquired. In the words of Mr. Justice Kekewich in Munday v. Carey (1905) 22 Rpc 273, this is a rank case of dishonesty and the learned Assistant Registrar ought to have exercised his discretion under Section 18 of the Act and refused registration of the respondent proposed trade mark. I am conscious of the rule that an appellant court should not ordinarily interfere with the discretion exercised by the Registrar under Section 18 of the Act. But in this case the leaned Assistant Registrar had declined to exercise his discretion against the respondent only because he was to the view that the respondent were not guilty of dishonest trade practice. This view of the learned Assistant Registrar is clearly wrong and thereforee the discretion vested in him had been exercised on the basis of the wrong view. this is a fit case in may view where this court should interfere with the discretion exercised by the leaned Assistant Registrar. I hold that by reason dishonest trade mark. The order of the learned Assistant Registrar is set aside and the appeal is allowed. There shall be on order as to costs.
9. Appeal allowed.